Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 29/09/2016

Plamena Georgieva

Dimitrov, Petrov & Co. Law Firm

28 "Todor Alexandrov" Blvd., fl.7

1303 Sofia

BULGARIA

Application No:	015564222
Your reference:	OpenWheeler
Trade mark:	OpenWheeler
Mark type:	Word mark
Applicant:	Home Racer LLC 2230 SW 70 Ave Ste 5 Davie Florida 33317 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/07/2016 pursuant to Articles 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for, OpenWheeler is descriptive and devoid of any distinctive character for part of the goods and services applied for, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/09/2016 which may be summarised as follows:

1. The combination OpenWheeler is not descriptive and is distinctive. At most there is an indirect link between the mark and the goods and services. The combination ‘open wheel’ only appears in a specialized dictionary of technical terms in the field of auto racing. It does not appear as a term in more commonly used dictionaries.

2. Each of the words ‘open and ‘wheel’ has more than thirty definitions. Thus, it is unlikely that an average consumer would associate the mark with the definition of ‘open wheel’ given in the Auto Racing Terms Dictionary namely Formula One and Indy car style race cars which are designed to have the suspension, wheels and tires exposed, no fenders. Only professional consumers who represent a small proportion of the relevant consumers will see the above meaning. The attention of the professional public is high and the difference between ‘open wheel’ and ‘OpenWheeler’ will be noticed by such an attentive public.

3. The mark OpenWheeler is unusual and is not an expression used in everyday speech.

4. Words from the Auto Racing Terms Dictionary have been registered by the Office, namely PADDOCK, AERO, APEX AUTOMOTIVE, BOOSTER, CAMBER and BOOST.

5. Evidence of acquired distinctiveness has been submitted.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

‘The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

As previously mentioned, the trade mark OpenWheeler contains words with the following meanings:

OPEN WHEEL

Formula One and Indy car style race cars which are designed to have the suspension, wheels and tires exposed, no fenders.

Information extracted from the online Auto Racing Terms Dictionary at http://auto-dictionary.com/Racing.htm on 21/07/2016.

ER: suffix, forming nouns, signifying the person or thing performing the action of the verb • driver

Information extracted from the online Chambers English Dictionary at http://www.chambers.co.uk on 21/07/2016.

Wheeler: noun

(in combination) something equipped with a specified sort or number of wheels ⇒ a three-wheeler

Information extracted from the online Collins English Dictionary at http://www.collinsdictionary.com/dictionary/english on 21/07/2016 .

Thus, the combination OpenWheeler of the mark immediately informs consumers without further reflection that the goods are for open wheel racing cars (i.e. cars that have the suspension, wheels and tires exposed and not incorporating fenders), that they are games based on this type of car or goods used in connection with these games and that the subject matter of the services is open wheel cars. The Office does not agree that there is an indirect link between the mark and the goods and services but considers that the consumer will easily see the connection between the mark and the goods and services.

As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C 363/99, ‘Postkantoor’, ECLI:EU:C:2004:86, § 86).

As mentioned in the official letter of 21/07/2016, the relevant public is made up of both the average and the professional consumer. Contrary to the applicant’s opinion, it is not considered that only a minority of the relevant professional public understands the term ‘open wheel’. The relevant public includes professionals in the motor racing business and average consumers who are fans of motor racing and these consumers will be aware of the meaning of ‘open wheel’ and OpenWheeler, namely a race car which is designed to have the suspension, wheels and tires exposed and not incorporating fenders.

Regarding the applicant’s observation that each of the words ‘open’ and ‘wheel’ has several definitions, that the term ‘openwheel’ only appears in a specialized dictionary and that OpenWheeler is not an expression used in everyday speech , it is pointed out that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

With regard to the applicant’s claim that the difference between ‘open wheel’ and ‘OpenWheeler’ will be noticed by the professional public it must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Furthermore, as mentioned above, the mark as applied for, OpenWheeler is meaningful in itself. The fact that there is no space between the words ‘open’ and ‘wheeler’ does not make the mark distinctive as the meaning of OpenWheeler is easily understood.

The fact that some terms from the Auto Racing Terms Dictionary have been registered by the Office does not mean that the term OpenWheeler is registrable. None of the terms mentioned appear to designate the style of a car as in the case at hand or at least is not as obviously descriptive of a car as in the current case where the term ‘wheeler’ indicates something equipped with wheels.

Article 7 (3) Distinctiveness Acquired by Use

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages ….

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation ….

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods/ services as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied ….

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T 396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C 108/97 & C 109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C 25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C 299/99, Remington, EU:C:2002:377, § 63).

As means of evidence to prove acquired distinctiveness the applicant submitted the following evidence and arguments:

• Appendix No 1: An extract from the website of the applicant showing some of the applicant’s products which are sold across Europe.

• Appendix No 2: An extract from http://stores.ebay.co.uk/openwheeler ltd showing advertisements for some of the applicant’s goods.

• Appendix No 3: An extract from http://offer.ebay.co.uk/ws/ebay showing the purchase history of the store at ebay.co.uk in relation to sales of goods under the mark OpenWheeler, namely one pair of Sports Racing Bucket Seats on each of the following dates: 5/09/2016, 7/08/2016, 12/07/2016, 11/07/2016, 28/06/2016, 14/06/2016, 10/06/2016 and 30/05/2016 and two pairs on 02/07/2016.

• Appendix No 4: An extract from http://offer.ebay.co.uk/ws/eBay showing the purchase history of the store at ebay.co.uk in relation to sales of goods under the mark OpenWheeler, namely one race seat driving simulator gaming chair on each of the following dates: 16/09/2016, 29/08/2016, 15/08/2016, 17/06/2016 and 24/05/2016.

• The applicant states that the customer feedback has been regularly posted on its websites.

• Appendix No 5: A Google search (extracts from which are attached) throughout Europe indicates the word OpenWheeler is linked to the applicant.

• Appendix No 6: An extract from http://openwheeler.co.uk showing the launch of products under the mark OpenWheeler in 2009.

In the case at hand, since the expression OpenWheeler has a meaning in English the relevant public in relation to which the acquired distinctiveness must be assessed is the English speaking public in the Community, i.e. in the United Kingdom, Ireland and Malta. In addition it consists of consumers with a knowledge of English throughout the European Union as in Cyprus, the Netherlands, Sweden, Denmark and Finland where English is widely understood. The question to be answered is whether a significant proportion of the relevant public in these countries has been sufficiently educated through exposure to the expression OpenWheeler to uniquely associate the goods and services bearing the trade mark with the applicant’s undertaking or economically linked undertakings.

It can be seen from the evidence provided that the mark has been used in Europe. However, from this evidence it is not possible to ascertain the level of recognition of the mark by English-speaking consumers in the European Union. The Internet extracts without any supporting evidence do not serve to show that the mark is recognised by consumers as emanating from the applicant. The only sales figures given relate to only one or two items on various dates from the United Kingdom eBay website and several of these dates relate to after the filing of the EUTM, which was 21/06/2016. Thus, the dates 5/09/2016, 7/08/2016, 12/07/2016, 11/07/2016, 2/07/2016, 28/06/2016, 16/09/2016, 29/08/2016, 15/08/2016 relate to after the filing of the EUTM. The evidence must prove that distinctiveness through use was acquired prior to the EUTM application’s filing date and thus the purchases on the dates after the filing date cannot be taken into account. Furthermore, there are no details of any sales in Ireland or Malta or any countries outside the United Kingdom. No advertising figures, invoices, market surveys, opinion polls or market share information have been provided. The applicant makes reference to its feedback websites but has not submitted any information from these websites. Appendices No’s 1 and 6 emanate from the applicant. It must be noted that evidence from the applicant itself is generally given less weight that that from independent sources. This does not mean that such kind of evidence does not have any probative value at all. However, it has to be assessed in conjunction with the other evidence submitted and the circumstances of the case which in the application at hand do not allow the Office to come to the conclusion that the relevant consumers in the European Union are used to perceiving the mark at issue as a badge of origin and not as a descriptive mark which is devoid of distinctiveness.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 15 564 222 is hereby rejected for the following goods and services.

Class 12: Vehicle seats; Head-rests for vehicle seats; Seat covers for vehicles; Upholstery for vehicles; Steering wheels for vehicles; Vehicle joysticks; Vehicle seat belts; Security harness for vehicle seats.

Class 20: Furniture; Gaming chairs; Seats; Seats of metal; Chairs [seats]; Easy chairs; Head-rests [furniture].

Class 28: Games; Gaming apparatus; Simulator chairs for playing video games.

Class 35: Advertising; Retail services in relation to games; Marketing; Presentation of goods on communication media, for retail purposes; Commercial information and advice for consumers [consumer advice shop]; On-line advertising on a computer network; rental of advertising space; rental of advertising time on communication media; Demonstration of goods.

The application may proceed for the remaining goods and services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Deirdre QUINN